By Ronald Slusky
Ronald Slusky mentored dozens of attorneys in “old school” invention analysis and claiming principles over a 31-year career at Bell Laboratories. He is now in private practice in New York City. This article is adapted from his book “Invention Analysis and Claiming: A Patent Lawyer’s Guide” published by the American Bar Association and available at ababooks.org. Ron can be reached at 212-246-4546 and firstname.lastname@example.org.
We have seen in previous columns that a desirable way of arriving at the broadest claim to an invention is to Begin from the Problem [Not the Embodiment]. We first identify the problem the invention is intended to solve, think about how—broadly and functionally—the problem was solved and then write a problem-solution statement that reflects what we’ve figured out. The claim itself can then be written based on the problem- solution statement.
Last month’s column, in particular, offered two prescriptions—Start Early and Think Big—that can help us to analyze the inventor’s embodiment(s) in broad problem/solution terms. This and future columns offer further invention analysis paradigms that can aid in the quest for the broad invention—a quest that the author calls “Reaching for Breadth.” Next month’s column, however...